Ex Parte Beausoleil et al

Patent Trial and Appeal BoardNov 19, 2012

12008605 (P.T.A.B. Nov. 19, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE ________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ________________ Ex parte RAYMOND G. BEAUSOLEIL, PHILIP J. KUEKES, WILLIAM J. MUNRO, TIMOTHY P. SPILLER, R. STANLEY WILLIAMS, and SEAN D. BARRETT ________________ Appeal 2010-004726 Application 12/008,605 Technology Center 2800 ________________ Before JOSEPH F. RUGGIERO, CAROLYN D. THOMAS, and STANLEY M. WEINBERG, Administrative Patent Judges. WEINBERG, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part. Appeal 2010-004726 Application 12/008,605 2 Claims 1-4 stand rejected under 35 U.S.C. § 102(e) as anticipated by or, in the alternative, under 35 U.S.C. § 103(a) as obvious over Welch (US 2007/0183738 A1; Aug. 9, 2007).1 2 Claim 5 stands rejected under 35 U.S.C. § 103(a) as obvious over Welch in view of Pearsall (US 2004/0150873 A1; Aug. 5, 2004). Claims 6 and 7 stand rejected under 35 U.S.C. § 103(a) as obvious over Welch in view of Noda (US 2002/0009277 A1; Jan. 24, 2002). Claims 8 and 10-20 stand rejected under 35 U.S.C. § 103(a) as obvious over Welch in view of Kornilovich (US 6,670,631 B2; Dec. 30, 2003). Claim 9 stands rejected under 35 U.S.C. § 103(a) as obvious over Welch in view of Kornilovich and Noda. STATEMENT OF THE CASE Appellants’ invention relates to an interconnect system having a first chip containing a modulator and a second chip containing a detector that detects modulation of the optical signal. Information from an information 1 Throughout this opinion, we refer (1) to the Appeal Brief filed May 29, 2009; (2) the Examiner’s Answer mailed September 23, 2009; and (3) the Reply Brief filed November 23, 2009. 2 The Answer does not expressly state when the Examiner relies on § 102 and when the Examiner relies on § 103. Because the first part of this rejection (Ans. 5:1-6:10) maps all of the limitations of claims 1-3 to Welch, we conclude that the Examiner applied § 102. Because the next part of this rejection (Ans. 6:11-22) states that “[o]ne of ordinary skill in the art would have found it obvious” (Ans. 6:14), we conclude that the Examiner has applied § 103. Similarly, because the Examiner uses an obviousness analysis for claim 4 (Ans. 7:1-6), we conclude that the rejection of claim 4 is based only on § 103. Appeal 2010-004726 Application 12/008,605 3 stream is extracted by decoding using a separate photodetector for each frequency channel used. The information stream may be instructions or data (reading or writing) intended for a particular tile in the second chip. A local electronic circuit performs the requested action (reading or writing data) in the tile. Spec. ¶¶ 0015, 0031, 0033; Figs. 3A, 3B. Independent claim 1 is illustrative with key disputed limitations emphasized: 1. A method for transferring information from a first chip to a second chip comprising: encoding an optical signal in the first chip so that the optical signal represents information; transmitting the optical signal from the first chip to the second chip; decoding the optical signal in the second chip; and using the information in the second chip. THE ANTICIPATION REJECTION The Examiner finds that Welch discloses every recited feature of representative claim 1 including decoding the optical signal in the second chip and using the information in the second chip. Ans. 5. Appellants argue that the Examiner’s application of Welch to representative claim 1 ignores the “using” step (App. Br. 4:19-21; Reply Br. 3:7–4:3), is inconsistent with Appellants’ Specification (App. Br. 4:26–5:17; Reply Br. 4:4-11; 5:23-30), and is inconsistent with the interpretation that those skilled in the art would reach (App. Br. 5:18-25; Reply Br. 4:12-22). Appeal 2010-004726 Application 12/008,605 4 ISSUE Under § 102, has the Examiner erred by finding that Welch discloses decoding the optical signal in the second chip and using the information in the second chip? FINDINGS OF FACT The record supports the following Findings of Fact (Fact) by a preponderance of the evidence: 1. Appellants’ light source 312 is a laser providing a beam containing one or more frequencies. Modulator 314 imprints information onto one or more frequency components of the optical stream corresponding to a location being accessed in chips 330. Waveguides 322 direct the optical signals to detectors in the receiving chip which decode the information using a separate photodetector for each frequency channel used. Each tile in chips 330 extracts instructions of data intended for that particular tile and through an electronic circuit performs a requested action, such as reading or writing data in that tile. Spec. ¶¶ 0032-33; Fig. 3B. 2. Welch has an optical transmitter chip TxPIC 300 optically linked to receiver chip RxPIC 10. Lasers 302 operate at designated wavelengths. Outputs of lasers 302 are modulated with an information signal at respective modulators 306. At RxPIC chip 10, demultiplexer 30 provides outputs 289A, 289B to receive respective channel signals. Photodetectors 290A and 290B provide an electrical response to the optical signals on lines 291A and 291B. Welch ¶¶ 0167, 0171; Fig. 64. Appeal 2010-004726 Application 12/008,605 5 ANALYSIS Claims 1-3 Appellants’ photodetectors decode information and use the decoded information to perform a requested action through an electronic circuit. FF1. Welch’s photodetectors also provide an electrical response to optical signals. FF2. The Examiner finds that Welch’s photodetectors convert optical signals to an electronic signal and then, using the information in the converted signals, form an output signal on the second chip. Ans. 5:13-16. Appellants contend that the Examiner’s interpretation of Welch ignores the “using” limitation because Welch’s production of an electrical output signal corresponds to the “decoding” limitation, leaving no other disclosure that meets the “using” step. App. Br. 4:16-24. In response, the Examiner further finds that the optical signal is first converted to an electrical signal “at the PDs” and the resulting electrical signal is then “used to form an output signal for the chip.” Ans. 11: 8-12. Therefore, the Examiner concludes, Welch’s “step of decoding is not the same as the step of outputting an optical signal, even if it is the decoded signal that is output.” Id. Contrary to Appellants’ contention, the Examiner’s analysis of Welch finds that Welch uses information in the second chip. Compare Ans. 11:6-12 with Reply Br. 3:17-21. We agree with the Examiner. Appellants’ other arguments are also not persuasive because they seek to rely on limitations that are not recited in claim 1, seek to incorporate limitations from their Specification into claim 1, and seek to rely on unsupported contentions regarding the knowledge of one skilled in the art. See App. Br. 4:13-15 (Welch’s output is used “elsewhere” rather than “in” Appeal 2010-004726 Application 12/008,605 6 the second chip); 4:26–5:17 (Appellants’ lengthy quotation from their Specification describes “a fundamentally different idea”); 5:24-25 (the content of the information in Welch “has no effect on or use in the working of the chip”); 5:18-23 (one skilled in the art would not interpret Welch in the same way as the Examiner’s interpretation); 5:26-28 (Welsh does not disclose a process that “enables the chip to eliminate or reduce dependence on an electrical I/O interface”). See also Reply Br. 3:16-17, 22-23 (“Welch does not teach any on-chip element that uses the output from the photodiodes”); 3:28–4:2 (Welch fails to teach or suggest “additional on-chip circuitry”); 4:18-23 (the “using” step means that “the information has an effect in the working chip”; in Welch, “information has no use in the working chip”). Regarding claim 3, the Examiner finds that Welch’s modulators 306 and multiplexer disclose the recited features. Ans. 6:4-10. In response to Appellants’ contention that the Answer does not address claim 3’s limitation that “components are modulated to represent respective information for use in respective locations in the second chip” (App. Br. 6:10-12), the Examiner finds that Welch does disclose those limitations. Ans. 13:12-17. Appellants’ Reply Brief does not contend that these latter findings are incorrect. We are therefore not persuaded that the Examiner erred in rejecting (1) representative claim 1 and claim 3; and (2) claim 2 not separately argued with particularity. Appeal 2010-004726 Application 12/008,605 7 Accordingly, we will sustain the Examiner’s rejection of claims 1-3.3 THE OBVIOUSNESS REJECTIONS Claim 4 Citing paragraph 196 of Welch, the Examiner finds that it would have been obvious to store in the second chip (RxPIC) the kind of information recited in claim 4. Ans. 7:6-6. Although Appellants provide a reason why they contend that Welch does not suggest storing the encoded information (Reply Br. 4:31–5:7), they expressly do not dispute the Examiner’s stated reasons supporting the Examiner’s obviousness conclusion. App. Br. 6:4-10. We therefore are not persuaded that the Examiner erred in rejecting claim 4 and we will sustain that rejection. Claim 5 We also sustain the rejection of claim 5, dependent from claim 1, because Appellants contend that Pearsall when combined with Welch still fails to suggest the “decoding” and “using” steps recited in claim 1. A statement that merely points out what a claim recites is not a separate argument for patentability. See In re Lovin, 652 F.3d 1349, 1356-1357 (Fed. Cir. 2011). In addition, non-obviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a 3 Because we find dispositive the Examiner’s application of Welch’s Figure 64 to claim 1, we do not consider the Examiner’s findings regarding Welch’s Figure 70 and Welch’s paragraphs 201 and 202. Ans. 6:11-22. Appeal 2010-004726 Application 12/008,605 8 combination of references. In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). We are therefore not persuaded that the Examiner erred in rejecting claim 5. Claims 6 and 7 We also sustain the rejection of claims 6 and 7, dependent from claim 1, because Appellants contend that Noda when combined with Welch still fails to suggest the “decoding” and “using” steps recited in claim 1. See Lovin, supra; Merck, supra. We are therefore not persuaded that the Examiner erred in rejecting claims 6 and 7. Claims 8 and 10-20 We do not, however, sustain the rejection of claims 8 and 10-20. The Examiner finds that Welch does not state that the information encoded in the optical signal indicates quantum manipulations or that using the information comprises performing quantum manipulations of quantum states of systems in the devices. Ans. 9:2-4. Relying upon column 1, lines 10-22, and column 7, lines 55-60, of Kornilovich, the Examiner concludes that it would have been obvious to use moletronic elements to replace the chip elements disclosed by Kornilovich et al. to provide a smaller and more compact device thereby forming a quantum information circuit in which the optical signal indicates quantum manipulations, wherein using the information comprises performing quantum manipulations of quantum states of systems in the devices comprising quantum dots and the quantum state is the spin state of an electron, and wherein the quantum information is selected from a group consisting of a qubit, a qudit or a qunit. Ans. 9:9-15. Appeal 2010-004726 Application 12/008,605 9 Without providing any additional citations to Kornilovich or to any other authority, the Examiner also finds that Kornilovich teaches that moletronic (molecular electronic) elements that perform a variety of logic and memory applications (i.e., information processing) may be used to replace classical chip elements thereby forming a quantum information circuit in which the optical signal indicates quantum manipulations, as discussed in the rejection set forth above. Ans. 15:6-10. In discussing claim 15, Appellants contend that Kornilovich does not disclose or suggest quantum information processing. App. Br. 7:28. And, in discussing claims 8 and 10-20, Appellants further contend that Kornilovich is directed to molecular implementations of classical circuit elements. The only use of the word “quantum” in Kornilovich refers to a “quantum dot” at column 4, line 63, and Kornilovich refers to a quantum dot in describing changes in classical voltage drops. In general, classical circuit elements or classical information processes do not indicate or suggest quantum manipulations or quantum information processing because of the very different characteristics of quantum systems when compared to classical systems. Reply Br. 5:20-26. We find that the portions of Kornilovich cited by the Examiner do not make any mention of quantum information or quantum manipulations. We conclude that the Examiner has not produced sufficient evidence to persuade us by a preponderance of the evidence that claims 8 and 10-20 are obvious over the cited references.4 4 Absent Appellants’ contentions in their Appeal Brief regarding the insufficiency of the cited references to teach claim 15’s quantum information processing (App. Br. 7), we would have sustained the rejection Appeal 2010-004726 Application 12/008,605 10 We are therefore constrained by the record before us to find that the Examiner erred in rejecting claims 8 and 10-20. Claim 9 We also do not sustain the rejection of claim 9 because it depends from claim 8 and because Noda does not overcome the deficiencies of Kornilovich.5 We are therefore constrained by the record before us to find that the Examiner erred in rejecting claim 9. CONCLUSION Under § 102, the Examiner did not err in rejecting claims 1-3; under § 103, the Examiner did not err in rejecting claims 4-7 but did err in rejecting claims 8-20. DECISION The Examiner’s decision rejecting claims 1-7 is affirmed. The Examiner’s decision rejecting claims 8-20 is reversed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R. § 1.136(a)(1)(iv) (2010). of claims 8 and 10-14 based on Lovin, supra, and Merck, supra. We do not sustain those rejections because they contain recitations regarding quantum manipulations and because we conclude that the Examiner’s obviousness conclusion does not have a rational basis. 5 We note that Appellants incorrectly assert that clam 9 depends from claim 1. App. Br. 8. Instead, it depends from claim 8. See Appellants’ Claims Appendix and the Listing of Claims filed August 28, 2008. Appeal 2010-004726 Application 12/008,605 11 AFFIRMED-IN-PART babc